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Patent Bar Exam: MPEP Search Strategies

When the patent bar exam was given in written form test takers were permitted to bring in with them any materials they wanted except for old exam questions. The ability to bring practically anything into the examination lead to people tabbing the Manual of Patent Examining Procedures, creating detailed and easy to use outlines, and bringing easy to follow flow charts and tables.

Those days are long gone, for nearly a decade now, but when you do take the examination you will be provided with an electronic copy of the Manual of Patent Examining Procedures. Don’t fool yourself though — the fact that this is an “open book” exam does not mean that it is easy or that you will be able to “wing it” and rely on the MPEP as a crutch. Many people have difficulty finishing the exam and it is a recipe for failure to simply plan to rely on the MPEP to get you through the exam. This is particularly true today where much of the examination is based on new material not found in the MPEP and only available in Federal Register Notices.

Still, you absolutely must spend a so at least a part of your study familiarizing yourself with both the MPEP and search techniques and strategies that have a chance of success come exam day. You may only have time to look up information relevant to a handful of questions, but if you do go to the MPEP you want to do so with maximum confidence that the time you spend will produce a successful result.

With this in mind, here are a few MPEP search strategies to use in your practice for the patent registration exam.

MPEP SEARCH STRATEGIES 1 – SEARCH BY CHAPTER

The PDF version of the MPEP will only allow you to search within only 1 chapter at a time. So, if you are looking for a reference in the MPEP using the search feature you are going to need to know what chapter contains the answer. Don’t be discouraged by this limitation. By the time you take your exam you should know the MPEP frontwards and backwards, specifically able to recite which chapter contains which topical information. Thus, being able to search only 1 chapter at a time should be beneficial. Additionally, you would never want to have the MPEP searchable from start to finish. You will notice, if you haven’t already, that the MPEP is extremely redundant. What this means is that if you were to search from start (page 1) to finish (the last page) for virtually any topic, you would find hundreds of references, most of which are not relevant to your immediate needs. By only allowing chapter by chapter searching the Patent Office is actually doing you a favor. Having said this, you do need to know what each chapter generally contains so you don’t have to waste time figuring out which chapter contains the information you are looking for.

MPEP SEARCH STRATEGIES 2 – STRING SEARCH

The search feature that comes incorporated into the PDF version of the MPEP that you will be given is what is called a string search. What this means is that the results returned will come back with matching strings of text. For example, if you type in “patent” the search will find not only the word “patent”, but the word “patentable”. This is because the first six letters of the word “patentable” are “patent”. This may seem like a silly example, and it probably is. Hopefully by exam time you would not need to look up the word “patent” in the MPEP. Nevertheless, you might be tempted to try and look up “RCE”, the short hand reference of a request for continued examination. This might seem reasonable, at least until you realize that the word “commerce” ends with the letters “rce”. Given that the United States Patent Office is a federal agency within the Department of Commerce, you can imagine how often the word “commerce” appears in the MPEP itself. The point is that you want to be familiar with the quirks associated with using the search feature prior to exam day. The only way to become familiar with the quirks, such as the string search quirk, is to spend some time practicing searching .

MPEP SEARCH STRATEGIES 3 – STRANGE NAMES

Another way to speed up the look-up process is by identifying strange names of inventors or particularly well defined technologies. Now, don’t panic, the exam itself is content neutral with respect to technology. Just because the question starts to mention some specific technology does not mean you need to understand the technology. In all likelihood the question is just giving you background information to create a context, and the question will deal with some procedural matter, such as when you need to file an appeal brief or how long you have to respond to some action of the examiner. Nevertheless, those who write the questions for this exam sometimes lift questions straight out of the MPEP, without changing the names of the parties or the name of the technology. Thus, by putting in an inventor name or the name of a specific invention into the MPEP search field you might find yourself taken to the exact spot in the MPEP where the question writer lifted the question, which means an easy point for you. Of course, you can’t do this if you are not intimately familiar with the MPEP and know what each chapter deals with from a topical standpoint.

MPEP SEARCH STRATEGIES 4 – CHAPTER TABLE OF CONTENTS

During the exam you should have no need to go to the MPEP Index. The Index to the MPEP should be considered completely useless for you on exam day. As already mentioned, and you know or will soon learn, the MPEP is extremely redundant. If you go looking for information about RCEs you will find that there are dozens of references to RCEs in the Index. When you need to go at about an average of 3 minutes per question you simply do not have time to hunt and hope as you weave your way through dozens of possible places where you might find the answer you are seeking. Thus, you need a different strategy. That strategy needs to leverage the table of contents for each chapter of the MPEP. If you know the question is dealing with examination of an application the answer will almost certainly be found in Chapter 700, for example. Don’t go to the Index, but rather open Chapter 700 and scroll down the table of contents. The headings are quite descriptive. Even if you get a nuanced, fact based question about examination you should be able to find the spot in the MPEP that addresses the critical point within the question. Give it a try during your study.

CONCLUSION

Finally, a word of caution. Please do not assume that this or any other article is a substitute for taking a patent bar review course or engaging in extensive study. The patent exam is difficult and not something that you can simply show up, take and pass. The strategies discussed here, when coupled with a serious and comprehensive study regime, may give you an extra point or two on exam day.

If you are interested in taking the patent bar exam please see the General Requirements Bulletinfrom the USPTO. For more information on the patent bar exam please see:

The Author

Gene Quinn
is a Patent Attorney and Editor and founder of IPWatchdog.com. Gene is also a principal lecturer in the PLI Patent Bar Review Course and an attorney with Widerman Malek. Gene’s specialty is in the area of strategic patent consulting, patent application drafting and patent prosecution. He consults with attorneys facing peculiar procedural issues at the Patent Office, advises investors and executives on patent law changes and pending litigation matters, and works with start-up businesses throughout the United States and around the world, primarily dealing with software and computer related innovations. Gene is admitted to practice law in New Hampshire, is a Registered Patent Attorney and is also admitted to practice before the United States Court of Appeals for the Federal Circuit. CLICK HERE to send Gene a message.

Warning & Disclaimer: The pages, articles and comments on IPWatchdog.com do not constitute legal advice, nor do they create any attorney-client relationship. The articles published express the personal opinion and views of the author and should not be attributed to the author’s employer, clients or the sponsors of IPWatchdog.com. Read more.

Discuss this

There are currently 1 Comment comments.

Mark AnnettSeptember 3, 2013 1:25 pm

I think Gene is absolutely correct on all counts, especially when he says, “patent exam is difficult and not something that you can simply show up, take and pass.” From my own experience, studying how to search the MPEP is essential if you want to pass. Below is an except that I wrote up after just having passed the exam, which collaborates everything Gene just said.

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I was pretty stoked to take the exam because the test prep that i had been using for self study led to expect that 70% of the questions that I would see would come from the question bank and the other 20% would be from questions on the old exams and then the remaining 10% would be new pilot questions.

If only that had been true, the exam would have been a breeze. Even though I am 46, I still have a phenomenal memory for questions that I have seen before. Only about half of the questions in the total exam that I took were ones that I had seen before. Unfortunately, in the morning session it was only about a 1/3. I had to do far more look-up in the first part of the exam than I expected. As a result when I finished my first pass through the exam I only had 30 minutes left and I was unable to get back through all of the questions that I had marked for review within those 30 minutes.

In the 2nd half they were much more kind to me and I saw a lot more questions that I knew and for some of these I was so familiar that I could instantly just go right to the answers. I finished my first pass thru with some look-up with an hour remaining and I got through a 2nd pass on all of the questions I had marked for review with 2 minutes to spare.

So here is what I could have done better. I should have practiced far more intensively on how to look things up. Since roughly 50% of the questions were new to me I had to look up far more than I had expected.

Here is the strategy that I would use for a new question. I would read the question and see if I could eliminate the answers down to two (no more than three) possible answers. If I couldn’t do that I would look at the answers and then see if I could guess which was the right one. If it was only a guess or I was down to two answers then I would ask myself, do I know what section of the MPEP to go to or am I going to have to search the subject index to find it first. If I knew what section to go to then I would look at the question and the answers that I thought it might be and see if I knew what word (or words) would be good search words to use to help me find the answer quickly. If I thought there was a good possibility that I could find the answer quickly. I went for it!

If I didn’t think I could find it quickly then I would have to decide whether or not I still wanted to look it up. If I did I tried to find it as quickly as possible. If I wasn’t being successful in my search I would give up on the search and then give the question my best guess and then mark it and move on! BEING WILLING TO MOVE ON IS KEY!

I didn’t know as well as I should have what was contained in each section of the MPEP. So, having to go to the subject index first slowed me down. Also the version of the MPEP that I had practiced with showed me an index of all the entries that had the word I was searching for along with part of the sentence that it was next to. As a result, I could sometimes find the answer by looking at the index.

There is no such index during the exam. You have no idea even how many times that word you are looking for is in the text you are searching. The only thing you can really do is hit “find again” to go to the next entry. If the word I was searching for occurred to frequently then I would quickly see if I could think of a better word and if not abandon the question.

I will say this, often if you see a good phrase to search but don’t know which section of the MPEP to search, often I have found it useful to go directly to the Patent Rules OR Patent Law section of the MPEP and search there instead of going to the subject index first and then a particular section. If I have a good phrase then this will potentially take me write to the answer in one step rather than two. Through practice searching I was able to get a feel for which one to use but I didn’t do as much practice as I should have.

At least 85% of my preparation was spent on knowing the answers to question and 15% on search strategies. Given that only 50% of the questions were ones that I had seen before, I would suggest that you would be better of spending at least 50% of your time on developing fast efficient search strategies utilizing only the limited tools that are available to you during the exam.

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[Note: I took the exam a couple of years ago so I was pre-AIA so studying how to search is even more important now!]

At IPWatchdog.com our focus is on the business, policy and substance of patents and other forms of intellectual property, such as copyrights and trademarks. Today IPWatchdog is recognized as one of the leading sources for news and information in the patent and innovation industries. In January 2014 we were honored to be inducted into the ABA Blawg Hall of Fame after being recognized for 3 years as the top IP blog on the Internet.